DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgement of the Response to the Election of Species Requirement
2. Applicants’ election of Species (I), without traverse, within the response of 30 December 2025 is acknowledged. As a result, claims 14 and 15 are withdrawn from further consideration as being drawn to a non-elected species.
Claim Rejections - 35 USC § 101
3. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claim 13 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because a use is not a statutory class of invention.
Claim Rejections - 35 USC § 112
5. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
6. Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
If the use claim is considered to be analogous to a process claim as, then it is further indefinite, because no definitive process steps have been set forth.
In accordance with Office policy, claim 13 will not be examined further on the merits.
7. Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Firstly, all language throughout the clams denoted by “preferably”, “more preferably”, “even more preferably”, “and “most preferably”, renders the claims indefinite, because it is unclear if or to what extent the preferred language further limits/modifies the non-preferred language.
Secondly, with respect to claims 1 and 11, the language regarding the molecular weight limitation and the NCO content is confusing, because, as drafted, it is unclear if the molecular weight pertains to the polyol and it is further unclear that the NCO content pertains to the prepolymer, as opposed to the polyol.
Thirdly, with respect to claims 1 and 11, it is unclear what chain length constitutes a short chain polyol. The examiner has considered the disclosure for guidance; however, the language is disclosed in terms of preferential language and therefore fails to be adequately definitive.
Fourthly, with respect to prepolymer (ii) of claims 1 and 11, it is unclear if the molecular weight limitation governs only the succinic acid based polyol or both polyols.
8. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
9. Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Since claim 11 is dependent from claims 1-10, it is noted that the broader limitations of claim 11 fail to further limit the more narrow limitations of claims 3, 4, and 6. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Prior Art Rejection
10. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
11. Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Stobbie, IV et al. (US 5,436,302)(hereafter Stobbie) in view of Smith et al. (US 2003/0009049 A1).
Stobbie discloses an adhesive composition containing a blend of two isocyanate terminated prepolymers consisting essentially of (a) from 10 to 90 parts by weight of a first polyurethane prepolymer produced by reacting polyhexamethylene adipate polyol, having a molecular weight of at least 2,400 (satisfying instant claim 3) (see abstract and column 2, lines 36-45) with a polyisocyanate, wherein 4,4’-MDI (satisfying instant claim 2) is disclosed as being especially preferred (see column 5, lines 11-13), and (b) 90 to 10 parts by weight of a second polyurethane prepolymer which comprises the reaction product of a polytetramethylene ether glycol, having a molecular weight of at least 500, with a polyisocyanate, such as 4,4’-MDI, wherein the mixture provides an isocyanate group-to-hydroxyl group ratio of greater than 1 (see column 2, lines 46-53). Furthermore, within column 2, lines 54-63, it is disclosed that additional components may be added, such as additional isocyanate terminated prepolymers, and within column 4, lines 37-53, it is disclosed that the additional or third prepolymer may be added for such purposes as adjusting set time, green strength, tack or final strength and that the prepolymer may be derived from polyalkylene ether polyols. Regarding instant claims 7 and 8, the claimed catalyst is disclosed within column 6, lines 45 and 46 and the footnote of Table 1, and catalyst quantities that satisfy those claimed are disclosed within column 5, lines 66-68. Regarding the short chain polyol and curative limitations of instant claims 1 and 9-11, see column 5, lines 53-66. Regarding instant claim 12, applicants’ attention is directed to claim 16 of the reference.
12. Stobbie differs from the instant claims in that a prepolymer derived from polypropylene glycol is not specifically disclosed and the claimed NCO contents and MDI monmer contents are not disclosed. However, the use of polypropylene derived isocyanate terminated prepolymers within adhesive compositions was known at the time of invention. Smith et al. disclose the use of these prepolymers and operate within NCO content ranges that satisfy those claimed. Furthermore, residual diisocyanate monomer contents are disclosed that approximate those claimed, and the position is taken that one would have been motivated to reduce the disclosed contents further, in view of the known health issues stemming from exposure to isocyanate monomers. See abstract of the secondary reference and paragraphs [0024] and [0026]. Furthermore, Smith et al. demonstrate that their prepolymer having reduced monomer content yields superior results (see Examples within Smith et al.). Given these results and the teachings within the primary reference regarding the use of an additional prepolymer, the position is taken that one would have been motivated to (1) introduce the prepolymer of the secondary reference into the composition of the primary reference and (2) control NCO contents and reduce monomer contents of the prepolymer of the primary reference, so as to arrive at the instant invention.
Conclusion
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/ Primary Examiner, Art Unit 1765